The use of an individual EU trade mark as a label of quality is not a genuine use

Print this page 13-06-2017
IPPT20170608, CJEU, WF Gozze Frottierweberei v Verein Bremer Baumwollborse

TRADE MARK LAW

 

The use of an individual EU trade mark as a label of quality is not a genuine use. An individual trade mark cannot be declared invalid, on the basis of Article 52(1)(a) and Article 7(1)(g), because the proprietor of the mark fails to ensure, by carrying out periodic quality controls at its licensees, that expectations relating to the quality which the public associates with the mark are being met. The provisions of 207/2009 on the Community trade mark cannot be applied mutatis mutandis to individual trade marks.

 

"51. In the light of all the foregoing considerations, the answer to the first question referred is that Article 15(1) of Regulation No 207/2009 must be interpreted as meaning that the affixing of an individual EU trade mark, by the proprietor or with his consent, on goods as a label of quality is not a use as a trade mark that falls under the concept of ‘genuine use’ within the meaning of that provision. However, the affixing of that mark does constitute such genuine use if it guarantees, additionally and simultaneously, to consumers that those goods come from a single undertaking under the control of which the goods are manufactured and which is responsible for their quality. In that case, the proprietor of the mark is entitled to prevent, pursuant to Article 9(1)(b) of that regulation, the affixing by a third party of a similar sign on identical goods, if that affixing creates a likelihood of confusion on the part of the public.

 

57. Accordingly, the answer to the first part of the second question referred for a preliminary ruling is that Article 52(1)(a) and Article 7(1)(g) of Regulation No 207/2009 must be interpreted as meaning that an individual mark cannot be declared invalid, on the basis of a joint application of those provisions, because the proprietor of the mark fails to ensure, by carrying out periodic quality controls at its licensees, that expectations relating to the quality which the public associates with the mark are being met.

 

61. Accordingly, the answer to the second part of the second question referred is that Regulation No 207/2009 must be interpreted as meaning that its provisions on collective EU trade marks may not be applied mutatis mutandis to individual EU trade marks."

 

IPPT20170608, CJEU, WF Gozze Frottierweberei v Verein Bremer Baumwollborse

 

C-698/15 - ECLI:EU:C:2017:434